Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)

“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 

In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  


Continue Reading

By Siân Croxon, Partner, DLA Piper UK

The CJEU has provided some clarification of the law on when EU customs officials can seize counterfeit goods that are merely in transit through the EU. 

The story began in 2008 when a consignment of Nokia branded mobile phones arrived in Heathrow in transit from China to Colombia.  The customs officer was suspicious and sent a sample to Nokia for inspection which duly revealed that the phones were indeed counterfeit.


Continue Reading

Reposted from DLA Piper’s Media & Sport Group Bulletin

Editorial Team: Nick FitzpatrickDuncan Calow and Patrick Mitchell

The copyright infringement suit filed in New York alleges “widespread and unauthorized reproduction and distribution of millions of copyright books” by five universities and the HathiTrust through cooperation agreements entered into with Google Inc.
The copyright infringement suit filed on 12 September 2011 by the Authors Guild, two international writers groups and eight authors, alleges that the universities and HathiTrust (a large-scale collaborative repository of digital content from research libraries) are violating copyrights by scanning, duplicating and distributing their books. The plaintiffs are particularly concerned by the plan by HathiTrust to make available a small number of ‘orphan works’, where no author or publisher can be located.

The copyright infringement suit filed in New York alleges “widespread and unauthorized reproduction and distribution of millions of copyright books” by five universities and the HathiTrust through cooperation agreements entered into with Google Inc.

The copyright infringement suit filed on 12 September 2011 by the Authors Guild, two international writers groups and eight authors, alleges that the universities and HathiTrust (a large-scale collaborative repository of digital content from research libraries) are violating copyrights by scanning, duplicating and distributing their books. The plaintiffs are particularly concerned by the plan by HathiTrust to make available a small number of ‘orphan works’, where no author or publisher can be located.


Continue Reading

By Simon LevineCatherine Beloff, DLA Piper United Kingdom

Simon Levine
Catherine Beloff

Beechwood House Publishing (t/a Binleys) v Guardian Products Limited & another [2011] EWPCC 22 

His Honour Judge Birss QC has handed down a landmark ruling in the Patents County Court, with positive and important implications for the protection and enforcement of sui generis database right. 

The claimant in this case publishes a database called Binleys Database of GP Practices, consisting of the names and addresses of individuals, such as practice nurses and doctors, associated with GP practices.  As is common practice amongst owners of large databases, Binleys ‘seeds’ the database.  Seeding involves including fictional dummy contacts (in this case, Binley’s staff) and unique indicators within a database to enable the owner to monitor whether someone is using its data unlawfully.  Binleys finds out if someone is using data from its database because a letter will be sent to one of its seed addresses.


Continue Reading

By Scott McIntosh and Joe Englert 

Reposted from DLA Piper client alert

A Florida appellate court recently held in Ball v. D’Lites Enterprises, Inc., 2011 WL 3109733 (Fla. 4th DCA July 27, 2011), that a franchisor was not entitled to judicial absolute immunity for allegedly defamatory statements made regarding several franchisees on its corporate website, even though the franchisor and franchisees were currently engaged in litigation and the statements were related to the issues underlying the dispute. In light of this decision, franchisors, franchisees and franchisee associations should be aware that, when posting statements on the Internet related to pending litigation, they will not likely be protected by judicial absolute immunity.


Continue Reading

In a landmark ruling, the UK High Court has delivered its verdict in Round Two of Hollywood versus the Copyright Pirates – despite Newzbin2 not even taking part in the fight.

Ringside rules

Rights-holders have long sought an effective legal mechanism to reduce the scale of online piracy of copyright material by UK users. Rights-holders are often prevented from taking action against primary infringers because they locate themselves beyond the jurisdiction of the courts or use decentralised networks in order to distribute content.  On the other hand, taking action against individual consumers has never been the favoured option.  Internet service providers (“ISPs”), the rights-holders argue, are the gatekeepers that provide the facilities that allow UK users to infringe copyright on a massive scale.  Moreover, they are not a moving target and have the practical means to restrict access to sources of infringements.

This case turned on the application of section 97A of the Copyright, Designs and Patents Act 1988, which provides that the High Court has the power to grant an injunction against an internet service provider (“ISP”) where the ISP has “actual knowledge of another person using their service to infringe copyright“.  The section was adopted in order to implement Article 8(3) of the Information Society Directive (2001/29/EC): “Member States shall ensure that rightsholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right“.  However, despite having the potential to be a valuable weapon against infringers, the provision has long sat collecting dust, untested by rights-holders. 

Until now.


Continue Reading